In Warner-Lambert Company LLC v Novartis Pte Ltd, apart from the requirement of Section 84(3) i.e. extension of scope of protection conferred by the patent, the court exercised its discretion to reject the proposed amendment due to an undue and inexplicable delay on the part of the plaintiff in requesting for the amendments. It was held that the plaintiff had had many opportunities to amend its patent both pre-grant and post-grant, and the plaintiff did not adequately explain the delay.

In light of the above decision and the earlier decision in The Ship’s Case, IPOS has reviewed and updated its practice on the assessment of post-grant amendments including the additional criteria. It requires the patentee to make full disclosure of all relevant matters in relation to the proposed amendments as to whether they were made in a timely manner – i.e. whether there was any unreasonable delay in seeking amendments and whether the patentee has gained an unfair advantage by delaying the amendments.

These procedural changes impact the pending post-grant amendments. Patentees should be prompt in filing post-grant amendments if any are necessary. The patent applications that are pending should consider filing a pre-grant amendment if the applicant comes across a prior art in another jurisdiction that may affect the validity of the patent.